Response USA, Inc.v.Recall Services, Inc.

Trademark Trial and Appeal Board

Aug 21, 2002

No. 91117487 (T.T.A.B. Aug. 21, 2002)

Paper No. 17
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UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Response USA, Inc.
v.
Recall Services, Inc.
_____
Opposition No. 117,487 to application Serial No. 75/399,233
filed on December 3, 1997
_____
Shruti D. Engstrom of Akin, Gump, Strauss, Hauer & Feld, L.L.P.
for Response USA, Inc.
John P. Iwanicki of Banner & Witcoff, Ltd. for Recall Services,
Inc.
______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Recall Services, Inc. has filed an application to
register the mark "HEALTH WATCH" for "programmable devices which
schedule and alert a person to take and refill medications and
which records [sic] information of scheduled events."1
Response USA, Inc. has opposed registration on the
ground that "[o]pposer and its predecessors in interest and title
have for many years provided personal emergency response systems,
1 Ser. No. 75/399,233, filed on December 3, 1997, which alleges, based
upon an amendment to allege use, a date of first use anywhere and in
commerce of December 26, 1997. The word "WATCH" is disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 117,487
2
namely, transmitters and monitors which, when activated, cause
emergency personnel to be dispatched"; that "[t]his system
records, stores, and causes vital health and personal
information, ... including an individual's medications and
allergies, to be relayed to responding emergency personnel, as
well as provides for emergency contacts to be notified if an
emergency occurs"; that opposer, "through its predecessor in
title and interest, began [continuously] using the mark 'HEALTH
WATCH' ... in connection with a personal emergency response and
life safety system comprising a remote transmitter, receiver, and
the parts therefor" since "at least as early as August 31,1992";
that opposer is the owner of a valid and subsisting registration
for the mark "HEALTH WATCH" for a "personal emergency response
and life safety system comprising a remote transmitter, receiver,
and the parts therefor";2 that opposer's "'HEALTH WATCH'
transmitter can be worn as a pendant or attached to a belt,"
while applicant's "'HEALTH WATCH' device is worn on the wrist and
resembles a wrist watch"; that the respective goods "are promoted
and provided to an overlapping class of purchasers, both parties
marketing their goods to the elderly, the disabled, and those
with chronic illnesses"; and that applicant's mark is likely to
cause confusion with opposer's mark in view of the relationship
between the parties' goods and the fact that such marks are
identical.
2 Reg. No. 1,914,619, issued on August 29, 1995, which sets forth a
date of first use anywhere and in commerce of August 31, 1992;
combined affidavit §§8 and 15.
Opposition No. 117,487
3
Applicant, in its answer, has admitted that its product
"is worn on the wrist," but otherwise has denied the remaining
salient allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; and, as opposer's case-in-chief, a notice of
reliance on a certified copy of its pleaded registration, showing
that the registration is subsisting and owned by opposer, and the
testimony of opposer's chief executive officer, Jeffrey Queen.
Applicant did not take testimony or introduce any other evidence
in its behalf. Briefs have been filed, but an oral hearing was
not requested.
Priority of use is not in issue in this proceeding
inasmuch as opposer has established that, as noted above, its
pleaded registration is subsisting and is owned by opposer. See
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). The testimony of its witness, Mr.
Queen, indicates that in any event opposer has continuously used
its "HEALTH WATCH" mark in connection with its personal emergency
response systems since approximately 1990. Such date obviously
is earlier than the December 3, 1997 filing date of the involved
application, which is the earliest date for priority purposes
upon which applicant, in the absence of having taken testimony or
offering any other proof of an actual date of first use of its
"HEALTH WATCH" mark for its identified goods, can rely in this
proceeding. See, e.g., Lone Star Mfg. Co., Inc. v. Bill Beasley,
Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974); Columbia Steel
Opposition No. 117,487
4
Tank Co. v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406,
407 (CCPA 1960); Zirco Corp. v. American Tel. & Tel. Co., 21
USPQ2d 1542, 1544 (TTAB 1991); and Miss Universe, Inc. v. Drost,
189 USPQ 212, 213 (TTAB 1975). Thus, the sole issue to be
determined in this case is whether contemporaneous use by the
parties of the identical mark "HEALTH WATCH" in connection with
their respective goods is likely to cause confusion as to the
source or sponsorship thereof.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we concur with opposer that, contrary to the
arguments set forth by applicant in its brief, opposer has met
its burden of demonstrating that confusion is likely to occur.
Specifically, applicant notes by way of background to its
contentions that it successfully overcame the citation of
opposer's pleaded registration as a bar to registration of its
mark in that:
Applicant responded to the refusal to
register based on a likelihood of confusion
by submitting the Opposer's own advertising
literature and arguing dissimilarity of
goods, channels of trade and consumer groups.
Applicant argued that the opposer's system is
used to call for help by alerting a response
center when a user is in need of assistance,
i.e. the so-called "I've fallen and I can't
get up" situation. The user and the response
center can communicate via the transmitter
and receiver and the response center can send
help, such as an ambulance, if necessary.
Applicant also submitted its own advertising
materials and explained ... that the mark was
used with a programmable messaging watch used
by individuals who desire scheduled reminders
Opposition No. 117,487
5
as to when medication is due to be taken and
at what dose or when prescription refills or
medical tests are needed. ....
Opposer, in addition to the certified copy of its
pleaded registration for the mark "HEALTH WATCH" for a "personal
emergency response and life safety system comprising a remote
transmitter, receiver, and the parts therefor," relies in its
brief solely upon the advertising, by both a third-party with
respect to applicant's goods and by opposer for its goods, which
applicant made of record in connection with the prosecution of
the involved application and the statements made by applicant in
response to the refusal to register.3 Opposer asserts that such
advertising and statements by applicant demonstrate, inter alia,
that opposer's goods are "directed towards the elderly,
recuperating medical patients, people with long-term illnesses,
[and] people who are physically challenged," and that its goods
are "presumed to travel through all trade channels appropriate
3 As the parties correctly realize, Trademark Rule 2.122(b)(1) provides
that "[t]he file ... of the application against which a notice of
opposition is filed ... forms part of the record of the proceeding
without any action by the parties and reference may be made to the
file for any relevant and competent purpose." However, as set forth
in TBMP §704, "statements made by counsel, and exhibits filed, in an
application ... do not constitute admissible evidence in the
applicant's ... behalf in an inter partes proceeding; the statements
must be established by competent evidence, and the exhibits must be
properly identified and introduced into evidence, at trial."
Nevertheless, such section further provides that (emphasis in
original):
Although the allegations made and documents and things
filed in an application ... are not evidence, in a Board
inter partes proceeding, on behalf of the applicant ...
(unless they are properly proved at trial), they may be used
as evidence against the applicant ..., that is, as
admissions against interest and the like.
Opposition No. 117,487
6
for such goods, namely hospitals and home health care agencies,
in addition to [being sold] directly to the end user."
Such evidence, opposer further contends, establishes
that applicant's goods "are presumed to travel through all trade
channels appropriate for the goods, e.g. hospitals, home health
care agencies and medical supply companies"; that applicant's
"product essentially acts a[s] a medical reminder system that
alerts its user that it is time to take [a] certain dose of
medication"; and that "the product alerts its users to perform
home health tests and reminds the user if the prescription needs
to be refilled." The application file history also shows,
according to opposer, that "[t]he typical user" of applicant's
product "is a medical patient on a strict medical schedule."
Thus, because the respective marks are identical and the parties'
goods "are used in the patient care industry, [and are] sold
through the same or similar [trade] channels," opposer maintains
that confusion is likely to take place. In particular, opposer
points out that the advertisement promoting applicant's goods
additionally states, as evidence that the same party would market
both applicant's goods and those of the kind sold by opposer,
that: "Don't forget to ask the Pioneer representative about the
personal emergency response systems and medical monitoring
services provided by Pioneer Medical Systems."
Applicant asserts in its brief, however, that opposer
has failed to sustain its burden of proof that confusion is
likely, arguing that (emphasis in original):
Opposition No. 117,487
7
Despite having every opportunity to
obtain discovery from Applicant and to
provide its own testimony, Opposer's trial
brief is devoid of any factual evidence of
record not already considered by the
Examining Attorney to support its position of
a likelihood of confusion. In fact, Opposer
requested no discovery from Applicant and
only took the self-serving testimony of its
President, Jeffrey Queen. Opposer has not
used any portion of that testimony in support
of its Trial Brief.
Opposer's position is simply that [the]
Examining Attorney ... got it wrong.
However, the Examining Attorney engaged in
the analysis of DuPont factors using the very
same evidence now before the Board. The
Examining Attorney found no likelihood of
confusion based on a combination of the
dissimilarity of goods, channels of trade and
consumer groups based on the very same
advertising literature now before the Board.
Opposer does focus on the following statement
in Applicant's advertising literature:
"Don't forget to ask the Pioneer
representative about the personal emergency
response systems and medical monitoring
services provided by Pioneer Medical
Systems." Opposer concludes that this
statement is evidence of overlapping channels
of trade. However, Opposer has taken no
discovery to identify whether the personal
emergency response systems and medical
monitoring services referenced in the
advertisement have any relation to the
transmitter and receiver product identified
in Opposer's registration. Opposer has
offered no factual evidence of its own.
There is absolutely no evidence of record
that would support a conclusion that
Opposer's transmitter and receiver product
has any similarity to the personal emergency
response systems and medical monitoring
services identified in the advertisement.
Without such evidence, Opposer's argument to
convince the Board of overlapping channels of
trade must fail.
Applicant's watch is dissimilar from
Registrant's receiver and transmitter. The
channels of trade and consumer groups are
sufficiently dissimilar. The Examining
Opposition No. 117,487
8
Attorney found no likelihood of confusion.
Opposer has not sought through discovery and
in fact has not provided any factual evidence
of record to support a contrary finding.
This opposition should be dismissed.
It is well established, however, that the Board is not
bound by an Examining Attorney's prior determination as to the
issue of likelihood of confusion. See, e.g., Jean Patou, Inc. v.
Aristocrat Products Corp., 202 USPQ 130, 133 (TTAB 1979); Formica
Corp. v. Saturn Plastics & Engineering Co., 185 USPQ 252, 253
(TTAB 1975); John B. Stetson Co. v. Globe Rubber Works, Inc., 180
USPQ 655, 655 (TTAB 1973); Anderson Clayton & Co. v. Losurdo
Foods, Inc., 175 USPQ 363, 365 (TTAB 1972); and 5 J. McCarthy,
McCarthy on Trademarks & Unfair Competition §32:103 (4th ed.
2002). Moreover, while we find that the evidence relied upon by
opposer in its brief is sufficient to sustain its burden of proof
in this opposition, we note that the testimony of its witness, as
discussed below, serves to bolster opposer's case and eliminates
any possible doubt as to there being a likelihood of confusion.
In particular, Mr. Queen, who formerly was president of
a company known as Health Watch,4 which opposer acquired in 1998
and which is now its primary business, testified that through
such predecessor in interest, opposer has continuously used the
mark "HEALTH WATCH" in connection with its personal emergency
response system and associated monitoring service, which operate
as follows:
4 The certified copy of opposer's pleaded registration, we observe,
shows that such registration issued in the name of Health Watch, Inc.,
a Florida corporation.
Opposition No. 117,487
9
Q. How does the Health Watch product
work?
A. The Health Watch product consists
of a personal transmitter which is worn like
a watch or a pendant around the neck, a help
counsel [sic, console] and a response center
here in Boca Raton. When the personal
transmitter or help counsel [sic, console]
are activated, it sends a signal to the
response center, opens up a two-way voice
channel, and at the response center we have
all the information that the provider has
given us on the subscriber. We speak to them
through the unit to ascertain that the
person's okay.
Q. When would someone activate the
personal Health Watch device?
A. If they had an event, an emergency
event, if they were at risk or just wanted to
have somebody to talk to.
Q. What do you do when you receive a
call from someone who's having an emergency
event?
A. Well, all calls are immediately
handled as if they were emergency events. We
then ascertain the severity of the emergency.
Once it has been verified that it is a true
emergency, we will send our responders, these
are family members, neighbors or friends that
have keys and EMS to transport.
....
Q. What are some examples of emergency
situations?
A. Heart attacks, falls. We deal with
life-threatening situations on a daily basis.
(Queen dep. at 11-12.)5
5 The product literature for opposer's goods which applicant submitted
in connection with its involved application is to the same effect,
stating in pertinent part that (bold in original):
The Health Watch Personal Response System consists of
three parts:
Opposition No. 117,487
10
According to Mr. Queen, opposer sells its personal
emergency response products directly to end user subscribers, of
which it has 15,000 such customers as of the February 15, 2001
date of his deposition. Opposer also "distributes its products
through hospitals and home care companies throughout the U.S. who
in turn distribute it to end user subscribers." (Id. at 10.) In
all, opposer "currently has 47,000 subscribers with ... recurring
revenue of approximately $975,000 a month from those subscribers.
The company has an enterprise value based on those two figures
[of] between thirty and fifty million." (Id. at 13.) Opposer's
"HEALTH WATCH" products are "used by the elderly, recuperating
patients, people with long-term illnesses, [and the] physically
challenged," among others. (Id. at 10.) However, the typical
"end user is primarily an elderly individual who is at medical
risk and would not be savvy on this type of product." (Id. at
14.)
First, a slim profile Personal Transmitter that you
wear around the neck as a pendant or at the waist on a belt
clip. While wearing the Personal Transmitter you can walk
around your home and yard. And, of course, it is WATERPROOF
so that you may wear it when you bathe or shower.
The second part is the Help Console which is placed on
a table or hung on the wall and is connected to a phone
line.
The third is our Health Watch Response Center which
monitors your system 24 hours a day, 365 days a year. Our
operators are trained to respond to any emergency, to offer
reassurance and to dispatch help immediately if warranted.
....
Opposition No. 117,487
11
As to the actual manner of use of the transmitters for
opposer's "HEALTH WATCH" personal emergency response systems, Mr.
Queen presented the following testimony:
Q. And you mentioned before that the
end user has a Health Watch transmitter?
A. Correct.
Q. And that can be worn on the body?
A. Correct.
Q. Where can it be worn?
A. The majority of our subscribers
today wear it on their wrist.
Q. Okay. Does it strap on like a
watch?
A. Correct.
(Id. at 12.) Mr. Queen also noted that opposer has discontinued
use of an earlier model of the transmitter for its "HEALTH WATCH"
goods, stating that "[w]e used to make a larger transmitter[,]
which we have since obsoleted to a new smaller one." (Id. at
15.)
In addition, Mr. Queen testified as follows concerning
opposer's having spent approximately half a million dollars on
development of a new version of its goods which, like applicant's
product, will remind the end users thereof to take their
medication:
Q. Okay. Are there any plans to
expand the Health Watch product line?
A. Yes, there are.
Q. To what other products and
services?
Opposition No. 117,487
12
A. We currently have prototypes that
include medication reminders.
Q. When you say medication reminder,
what do you mean?
A. The next generation Health Watch
product using the response center will remind
the subscriber of when to take their
medication.
Q. How will it do that?
A. Through voice or tones to remind
them to do so.
Q. And is that product currently being
developed?
A. Yes, it is.
Q. How far along has development gone?
A. The product itself is completed.
It is currently undergoing circuit level
testing.
Q. When do you expect it to be sold on
the market?
A. Six to twelve months.
(Id. at 15-16.)
Opposer advertises and promotes its "HEALTH WATCH"
goods, according to Mr. Queen, "[p]rimarily through literature
and trade shows to the health care industry," although it also
directs its advertising, including a website, "[o]n a lesser
extent to end users." (Id. at 15-16.) In addition, the health
care providers that sell its goods advertise and promote them to
end user subscribers using "[b]asically every marketing means,"
including newspaper, radio and billboard ads. (Id. at 19.)
Opposer, through its predecessor, has advertised and promoted its
Opposition No. 117,487
13
"HEALTH WATCH" goods since 1990, expending approximately $200,000
thereon each year.
As to use of the mark "HEALTH WATCH" by others, Mr.
Queen stated that the only such use by a competitor of opposer of
which he is aware is applicant's use thereof in connection with
the product which he characterized as applicant's "medication
reminder watch." (Id. at 21.) In particular, he indicated that
opposer's "dealings with the other Health Watch [product] are
through their distribution by Pioneer Medical[,] which is another
personal response system, and that's how we came to find out
about them." (Id. at 22.)6 Mr. Queen, whose job duties include
monitoring competitive activity, noted that not only does opposer
target the same kinds of customers which applicant's goods would
be targeted to, but that contemporaneous use by the parties of
the "HEALTH WATCH" mark in connection with their respective
products has caused actual confusion, as detailed below, in the
home care trade:
Q. Do you know of any actual confusion
between Response USA's Health Watch mark and
Recall Services' Health Watch?
A. Yes, at the last trade show that we
attended that they attended, they were
represented at Pioneer Medical's booth, and
it caused a great deal of confusion.
Q. Can you explain how?
6 The only other business, Mr. Queen testified, of which he is aware
that uses the "HEALTH WATCH" mark is "NBC Evening News" (Queen dep. at
24), but there is no indication as to the particular goods and/or
services with which such mark is used and there is no indication that
opposer regards such business as a competitor.
Opposition No. 117,487
14
A. Social workers, hospital
administrators and other health care
professionals were surprised to find Health
Watch being sold by Pioneer Medical. We then
told them that it wasn't us.
Q. So social workers and other health
care providers asked you how come the Health
Watch -- your Health Watch product [--] is
being sold by Pioneer Medical?
A. Yes.
Q. So they believed that the Health
Watch product being sold by Pioneer Medical
was in fact the same Health Watch product
being sold by Response USA.
A. Yes, or produced by Response USA.
(Id. at 25-26.)
It is well settled that the issue of likelihood of
confusion must be determined in light of the goods set forth in
the opposed application and pleaded registration and, in the
absence of any specific limitations therein, on the basis of all
normal and usual channels of trade and methods of distribution
for such goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). Here, the evidence of record plainly
establishes that applicant's goods are so closely related to
those marketed by opposer that their contemporaneous sale and use
under the identical mark "HEALTH WATCH" would be likely to cause
confusion.
Specifically, applicant's programmable devices for
scheduling and alerting a person to take and refill medications
Opposition No. 117,487
15
and for recording information as to scheduled events, and the
transmitters for opposer's personal emergency response and life
safety systems, are both worn on a person's wrist like a watch
and are designed to provide an alert as to personal medical needs
or emergency situations. Both applicant's goods and opposer's
products are for use in assisting a person's ability to continue
to live independently and to take care of himself or herself. In
fact, like applicant's medication reminder "watches," the next
generation of opposer's personal emergency response and life
safety systems will include the identical function of providing
information on when a person should take particular medicines.
Both applicant's products and those of opposer are directed to
the same classes of purchasers and users, including the elderly,
recuperating medical patients, persons with long-term illnesses,
and those who are physically challenged, and the respective goods
travel through some of the same distribution and trade channels,
such as hospitals and home health care and medical supply firms.
Applicant's goods, in fact, are also sold by a dealer which, like
opposer, markets personal emergency response systems and exhibits
such systems, along with applicant's "HEALTH WATCH" goods, at the
same trade shows where opposer displays its "HEALTH WATCH"
personal emergency response and life safety systems. The latter,
in fact, has even caused actual confusion as to the origin or
affiliation of applicant's and opposer's goods among such
relatively sophisticated and careful purchasers as social
workers, hospital administrators and other health care
professionals. Clearly, if those customers were confused by the
Opposition No. 117,487
16
identity of the marks at issue and the closely related nature of
the respective goods, then the typical end user of such goods,
which in the case of opposer's products its witness characterized
as being "primarily an elderly individual who is at medical risk
and would not be savvy on this type of product" (id. at 14),
would in view of the lack of discrimination be likely to be
confused as to the source or sponsorship of the parties' goods.
We accordingly conclude that customers and users
familiar with opposer's "HEALTH WATCH" mark for its personal
emergency response and life safety systems comprising a remote
transmitter, receiver and the parts therefor would be likely to
believe, upon encountering applicant's identical "HEALTH WATCH"
mark for its programmable devices which schedule and alert a
person to take and refill medications and which record
information of scheduled events, that such closely related goods
emanate from, or are sponsored by or affiliated with, the same
source.
Decision: The opposition is sustained and registration
to applicant is refused.